Joinder Motions Opposed by Patent Owner and Petitioner

Authored by Michelle Carniaux

For the first time, motions for joinder are being opposed by both the affected patent owner and an IPR petitioner. Trials were initiated in connection with IPR2013-00004 and 13-00007 on March 29, 2013 (same patent owner, Softview LLC, and the same petitioner, Kyocera Corporation). Exactly one month after the trials were initiated, a third party to the foregoing IPR trials, Motorola Mobility, filed two petitions for IPR. Kyocera and Motorola Mobility are defendants in patent litigations brought by Softview on these same patents.

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Parallel Inter Partes Review Proceedings

Authored by Michelle Carniaux

As reported in our blog post dated May 2, 2013, one way suggested by the USPTO to deal with the somewhat tight IPR petition page limit is to file multiple IPR petitions directed to different subsets of claims of a patent, rather than to petition for a waiver of the page limit.  The PTAB has now granted three pairs of such petitions.  See IPR2013-00048, -00049, -00052, -00053, -00064 and -00065.  Interestingly, the PTAB has not consolidated the proceedings that relate to the same patent.  Instead, the PTAB issued scheduling orders that coincide with each other so that oral arguments are heard on the same day.  See IPR2012-00048, Paper No. 15, 2 (May 13, 2013).   The possible benefits of allowing the proceedings to move forward in parallel  rather than consolidating the cases include allowing the parties to file less complicated papers (e.g., motions to amend and other papers in each proceeding may address smaller sets of claims within the page limit constraints), and allowing the PTAB to allocate additional time for itself for the proceedings.  It is likely the PTAB will expect the IPR parties to cooperate with each other regarding discovery in the parallel proceedings.  See CBM2012-00004, Paper No. 15 (February 22, 2013).

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Privy and Real Party in Interest – Joint Defense Groups and Trade Associations

Authored by Michelle Carniaux and Michael E. Sander

In addition to substantively attacking invalidity grounds raised in petitions for inter partes review (“IPR”), patent owners have attempted to prevent the initiation of IPRs based on procedural grounds. One such tactic is to take advantage of the bar against instituting an IPR of a patent if the petition requesting the IPR is filed more than 1 year after the IPR petitioner is served with a complaint alleging infringement of the patent. See 35 U.S.C. § 315(b). The one year bar applies not only to situations in which the petitioner was served with a complaint more than 1 year before filing the petition, but also to situations where the “real party in interest, or privy of the petitioner” was served with a complaint. Id. Thus, in some preliminary responses to petitions for IPR, patent owners have argued that an IPR should not be instituted since a real party interest, or privy to the petitioner (a party not named as a participant in the proceeding) was served with a complaint alleging infringement of the patent in issue more than 1 year before the IPR petition was filed.

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Approaches to Dealing with the Inter Partes Review (IPR) Petition Page Limit

Authored by Michelle Carniaux

Fitting a petition for inter partes review (“IPR”) into 60 pages as required by the Rules can sometimes be a challenge, particularly given the formatting requirements for such petitions (e.g., double spacing, 14-point font, etc.). See 37 C.F.R. 42.24(a)(i), 42.6(a). While a petitioner can move to waive the page limit, the petitioner must show in the motion how a waiver of the page limit is in the interests of justice. 37 CF.R. 42.24(a)(2). For the motions the PTAB has considered thus far, the PTAB has yet to find that a petitioner has met the “interests of justice” burden. Thus, alternative approaches to dealing with the page limits may need to be considered.

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